W&E Collard, L.P.

Trademark Trial and Appeal Board

Feb 3, 2016

No. 86246134 (T.T.A.B. Feb. 3, 2016)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: February 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re W&E Collard, L.P.
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Serial No. 86246134
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William Collard of Collard & Roe
for W&E Collard, L.P.

Jonathan R. Falk, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_______

Before Quinn, Wolfson, and Goodman,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
W&E Collard, L.P. (“Applicant”) filed an application to register the mark
NEWSVOTER (in standard characters) for “providing information, news and
commentary in the field of current events relating to current events, and political
topics whereby users vote and rate the importance of news and current events
items” in International Class 41.1

1 Application Serial No. 86246134, filed April 8, 2014 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in commerce.
Application Serial No. 86246134

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The Trademark Examining Attorney refused registration under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark,
when used in connection with Applicant’s services, is merely descriptive of them.
The Examining Attorney also refused registration based on Applicant’s failure to
comply with a requirement to submit an acceptable recitation of services.
When the Examining Attorney made the refusals final, Applicant appealed.
Applicant and the Examining Attorney filed briefs.

Acceptability of the Recitation of Services
The Examining Attorney contends that the wording “current events, and
political topics whereby users vote and rate the importance of news and current
events items” is indefinite and “must be clarified because the types of current
events must be listed and the nature of the voting services must be explained.” (6
TTABVUE 7).
Applicant never responded to the requirement relating to the indefinite
recitation of services. More specifically, the Examining Attorney made the
requirement for an acceptable recitation of services in the first Office action.
Applicant, in responding to the first Office action, totally ignored the requirement.
The requirement was made final in the next Office action. Applicant did not respond
to this action by requesting reconsideration, but rather filed a notice of appeal,
followed by an appeal brief. Again, its brief is silent with respect to the requirement
to submit an acceptable recitation of services that is sufficiently definite. In his
Application Serial No. 86246134

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brief, the Examining Attorney addressed both the Section 2(e)(1) refusal and the
requirement for an acceptable recitation of services; however, Applicant did not
submit a reply brief, foregoing yet another opportunity to explain his failure to
comply with or address the recitation of services requirement. See In re Brack, 114
USPQ2d 1338, 1340-41 (TTAB 2015). Thus, Applicant has never argued against the
requirement, or otherwise explained why it failed to respond to it.
The recitation of services must be specific, definite, clear, accurate, and concise.
See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB
1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). See
generally TMEP §1402.01 (2015). The Office has discretion to require the degree of
particularity deemed necessary to clearly identify the services covered by the mark.
In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).
We agree with the Examining Attorney that clarification of the recitation of
services in the present intent-to-use application, in accordance with her
requirement, is appropriate. Moreover, we are troubled by Applicant’s complete
silence on this point, notwithstanding no less than four opportunities to address the
requirement.
Accordingly, the refusal based on Applicant’s failure to comply with this
requirement is affirmed. Although we have affirmed on this basis, we will proceed
to consider the substantive refusal of mere descriptiveness based on the current
recitation of services which, at least for the purpose of deciding this Section 2(e)(1)
issue, is sufficient.
Application Serial No. 86246134

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Descriptiveness
The Examining Attorney maintains that Applicant’s services function to allow
users to vote on information relating to news stories and current events. According
to the Examining Attorney, the combined wording of Applicant’s proposed mark has
no meaning other than describing services that allow a user to vote on news stories.
In support of the refusal, the Examining Attorney submitted dictionary definitions.
Applicant argues that its composite mark does not immediately describe the
services, that there is no competitive need for others to use the proposed mark, and
that all doubt must be resolved in Applicant’s favor.
A term is merely descriptive of services within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the services. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely
descriptive is determined in relation to the services for which registration is sought
and the context in which the term is used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term need not
immediately convey an idea of each and every specific feature of the services in
order to be considered merely descriptive; it is enough if it describes one significant
attribute, function or property of them. See In re Gyulay, 3 USPQ2d at 1010; In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
Application Serial No. 86246134

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(TTAB 1973). This requires consideration of the context in which the mark is used
or intended to be used in connection with those services, and the possible
significance that the mark would have to the average purchaser of the services in
the relevant marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d
at 1219; In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs.,
226 USPQ 285 (TTAB 1985). The question is not whether someone presented only
with the mark could guess the services listed in the identification. Rather, the
question is whether someone who knows what the services are will understand the
mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012), quoting In re
Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002). See also In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a non-descriptive commercial
impression. If each component retains its merely descriptive significance in relation
to the services, the combination results in a composite that is itself merely
descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for
Application Serial No. 86246134

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managing a database of records that could include patents, and for tracking the
status of the records by means of the Internet). See also In re Petroglyph Games,
Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer
game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING
merely descriptive of real estate brokerage, real estate consultation and real estate
listing services); In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER
merely descriptive of commercial and industrial cooling towers); In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
descriptive of computer programs for use in developing and deploying application
programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of news and information services in the
food processing industry). However, a mark comprising a combination of merely
descriptive components is registrable if the combination of terms creates a unitary
mark with a non-descriptive meaning, or if the composite has a bizarre or
incongruous meaning as applied to the services. See In re Colonial Stores Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”); In
re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool
having a handle with a snow-removing head at one end, the head being of solid
uninterrupted construction without prongs”). “If one must exercise mature thought
or follow a multi-stage reasoning process in order to determine what characteristics
the term identifies, the term is suggestive rather than merely descriptive.” In re
Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See also In re Shutts,
Application Serial No. 86246134

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217 USPQ at 364-365; In re Universal Water Systems, Inc., 209 USPQ 165, 166
(TTAB 1980).
The word “news” is defined as “newly received or noteworthy information,
especially about recent or important events.” The word “voter” means “a person who
votes.” (; Office action, May 23, 2014).
When the terms “news” and “voter” are combined “the mark[s] as a whole, i.e.,
the combination of the individual parts,” does not convey “any distinctive source-
identifying impression contrary to the descriptiveness of the individual parts.” In re
Oppedahl & Larson, 71 USPQ2d at 1372. To the contrary, from “the perspective of a
prospective purchaser or user” of Applicant’s services, “because … the combination
of the terms does not result in a composite that alters the meaning of [any] of the
elements … refusal on the ground of descriptiveness is appropriate.” In re
Petroglyph Games, 91 USPQ2d at 1341. The proposed mark as a whole immediately
describes a purpose or function of the services, that is, the services allow users to
vote on (and thereby rate the importance of) news stories. See DuoProSS Meditech
Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at 1757 (SNAP SIMPLY SAFER
merely descriptive for “medical devices, namely, cannulae; medical, hypodermic,
aspiration and injection needles; medical, hypodermic, aspiration and injection
syringes”); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988)
(GROUP SALES BOX OFFICE is nothing more than a combination of the two
common descriptive terms most applicable to Applicant’s services which in
Application Serial No. 86246134

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combination achieve no different status but remain a common descriptive compound
expression).
Applicant’s arguments to the contrary are unpersuasive. While Applicant is
correct that we must resolve doubt in its favor, here we have no doubt. On this
record, we conclude that consumers familiar with Applicant’s services would
immediately understand, upon seeing Applicant’s proposed mark, that the services
feature voting on news stories, essentially allowing users to be “news voters.”
Furthermore, Applicant’s competitors who also might offer similar services should
have the opportunity to use the term “news voter” or variations thereof to explain
the purpose or function of their services. See In re Boston Beer Co. L.P., 47 USPQ2d
1914, 1920-21 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999);
In re Abcor Development, 200 USPQ at 217 (“The major reasons for not protecting
[merely descriptive] marks are … to maintain freedom of the public to use the
language involved, thus avoiding the possibility of harassing infringement suits by
the registrant against others who use the mark when advertising or describing their
own products.”). The fact that an applicant may be the first and only user of a
merely descriptive designation does not justify registration if the only significance
conveyed by the term is merely descriptive. See In re Phoseon Tech., Inc., 103
USPQ2d 1822, 1826 (TTAB 2012).
Accordingly, the refusal under Section 2(e)(1) based on mere descriptiveness is
affirmed.
Decision: The refusals to register are affirmed.